Cleartrip wins Cleartripindia.co.in

Written by Karthik Murthy on . Posted in Uncategorized

cleartrip_logoDomain Name Disputes India, India’s first Law Firm on Domain Name Disputes represented Cleartrip Private Limited, Industry leader in online travel booking in a case of domain name dispute before the National Internet Exchange of India.  The Complaint was filed against one Mr. Rahul Bhatnagar who had registered an identical domain name www.cleartripindia.co.in.  Domain Name Disputes India filed a complaint on behalf of Cleartrip.  The NIXI has now Ordered transfer of the said domain name in favour of Cleartrip. The Order passed by the Arbitrator of NIXI can be accessed here Cleartripindia.co.in.

The arbitrator pointed:

The mark “CLEARTRIP” is a unique and distinct word and has acquired distinctiveness and is known to be a trademark owned by the complainant. It has been shown by the complainant that the use of the said mark has been for quite sometime and that too for world over. The complainant has shown it various trade mark registration details world over. Although the Respondent has not appeared in these proceedings to present their case, but it is borne out from the records that Respondent has no bona fine or legitimate right over the mark “CLEARTRIP”. Merely by the adding of the name ‘India’ in the word cannot mean to be a mark different from the registered mark. This itself reflects the fact that the respondent wanted to create confusion the minds of the public. Hence the Respondent’s action to register the said domain name is not bona fine as he has no right over the mark “www.cleartripinda.co.in.”

Domain Name Disputes India helps corporates and Internet companies in online brand protection and fight against domain name cyberquatting. The author can be contacted at [email protected] or can be reached at +919840477744.

e-Reputation

Written by Karthik Murthy on . Posted in Uncategorized

Most of us would think that only brands and businesses would have their reputation at stake in the online space. With the ever-growing phase of the internet and the social networking sites, few people realize and understand that their reputation as an individual is also at stake in the virtual world.

With the spreading of various social networking sites like facebook, orkut, twitter, bebo etc., where almost more than half the world’s population are active, there is every chance that a fake profile is created or defaming comments are written or obscene images are posted about each one of us.  The chance is much more in the case of celebrities where there are more than thousand groups which malign their reputation or obscene or morphed images are posted about them.

There are also possibilities that groups or communities defaming the reputation of an individual are created on these social networking sites.  Obscene images of girls are being posted by miscreants, comments harming the reputation of an individual are being posted online and even photo’s are being published without one’s consent.  Further, even defamatory communities / articles are created about educational institutions, its principals, staffs and its teachers.

The above examples clearly prove that it is not only the brands or its owners or their businesses can be subject to online threats.  It is also the individuals who need to take steps to protect their reputation online.  By not taking part or being passive in these social networking sites may not be the solution, since one will not be able to know who is posting about them or if there a fake profile created in their name.

So what would be the solution? To protect your reputation online you need to take certain pro-active and precautionary steps like not providing your personal and intimate details, making your privacy settings to be strict and not adding friends whom you do not personally know.  You could also even engage an ‘Online Brand Protection Consultant’ who will assist you to know if there is any defaming content posted about you in the online space including the social networking sites.

Domain Name Disputes India are India’s First Consultants dealing exclusively about ‘Online Brand Protection’ & ‘Domain Name Disputes’.  They are more concerned not only about the reputation of various Brands and Businesses but also about the reputation of an individual.  To know more about ‘Online Brand Protection or ‘Domain Name Disputes’ please mail to [email protected] or call +91 98404 77744.

Basics of Domain Name Disputes

Written by Karthik Murthy on . Posted in Uncategorized

What would you do if the domain name containing your trade mark that you searched for registering it has been registered by somebody else? Would you keep quiet thinking that you should have registered it before somebody had registered it? Or would you explore the legal options and remedies that might be available and providing you with a chance to get the domain name back.

As we have said in numerous posts above (in almost all the posts), that your domain name and online presence through the domain name is what is needed most to succeed in this Internet-savy world.  You need an online presence to market your goods and to make consumers know about you and your goods.  So coming back to the basic question what would be your remedy if someone has registered a domain name which contains your Trade Mark.

As per the principles governing the Domain Dispute Laws, a domain name is also considered a Trade Mark.  Hence, in order to retrieve a domain name, you must have some right over the expression that has been contained in the Domain Name.  That right must also be proved using certain cogent documentary evidence.  Once you are able to get some documents, there are three options that can be done to retrieve a domain name back.

The First one is to issue a ‘cease and desist notice’ to the cybersquatter to stop using and hosting the domain name and to transfer the domain name.  In some cases, this might work out if the person who has registered the domain name is not a regular cybersquatter.

The Second step is to consider the option of either choosing litigating before the competent Courts or to commence an Arbitration Proceedings before the Competent Forum.  Usually, entities, individuals or companies prefer Arbitration since it is time-bound, cost-effective and reliable.

Choosing the Arbitration Forum depends upon the domain name which has been cybersquatted.  If the cybersquatted domain name extension is “.com”, “.org”, “.info”, proceedings has to be commenced either before the Arbitration Panel of the World Intellectual Property Organization (WIPO) or National Arbitration Forum (NAF).  If the disputed domain name contains the extension “.in”, Arbitration Proceedings have to be commenced before the National Internet Exchange of India (NIXI).

It is not mandatory that you should have a registered domain name for commencement of the Proceedings.  All that is required is that you have right over the expression that is contained in the Domain Name and you have cogent documents to prove that you have using the expression.  There have been many cases where we have helped our clients retrieve the domain name(s) which contained their Trade Mark in entirety.

Resolving a domain name dispute and retrieving a domain name has been never been so easier and with our assistance you can be rest assured that you rights in your Trade Mark and Domain Name is never misused.

Domain Name Disputes India are India’s First Legal Consultants dealing exclusively with ‘Online Brand Protection’ & ‘Domain Name Disputes’.  Karthik is the Director of Domain Name Disputes India and is a Master’s Degree Holder in Intellectual Property & Technology Law from the prestigious National University of Singapore.  He can be contacted at +91 98404 77744 or at [email protected].

DOT BRAND Applications Review – 1

Written by Karthik Murthy on . Posted in Uncategorized

As promised in the previous post, following are the .DOT BRAND Applications that have been filed by more than one Applicants.  The Internet Corporation for Assigned Names & Numbers (ICANN) had released the list of 1936 Applications for the new Generic Top Level Domains (New gTLD’s).

.DOT BRAND NUMBER OF APPLICANTS
ACCOUNTANT / ACCOUNTANTS 2
APARTMENTS 2
APP 13
ART 10
AUCTION 2
AUDIO 2
AUTO 4
BABY 6
BANK 2
BAR 2
BASEBALL 2
BASKETBALL 3
BEAUTY 3
BET 4
BINGO 2
BLOG 9
BOATS 2
BOOK 9
BOX 2
BROADWAY 3
BROKER 2
BUY 5
CAM 2
CAREER / CARRERS 2
CARS 3
CASA 3
CASINO 4
CHARITY 2
CHAT 4
CHURCH 2
CITY 3
CLICK 2
CLOUD 7
CLUB 3
COACH 2
COLLEGE 2
CONSTRUCTION 2
CORP 6
COUNTRY 2
COUPON / COUPONS 4
CPA 6
CRICKET 3
CRUISE / CRUISES 3
DATA 3
DDS 2
DEAL / DEALS 4
DELIVERY 2
DESI 2
DESIGN 8
DIET 3
DIRECT 2
DIY 2
DOCS 2
DOCTOR 3
DOG 3
DOT 2
DRIVE 2
EARTH 2
ECO 4
EXPERT 2
EXPRESS 2
FAMILY 3
FAN / FANS 2
FASHION 4
FILM 3
FISH 2
FIT 2
FLOWERS 4
FOOD 3
FOTBALL 2
FORSALE 2
FORUM 3
FREE 5
FUN 3
FURNITURE 2
FYI 2
GAME / GAMES 6
GARDEN 3
GAY 4
GIFT / GIFTS 4
GLOBAL 2
GMBH 6
GOLD 2
GOLF 4
GOO 2
GRATIS 2
GREEN 4
GROCERY 2
GROUP 5
GAURDIAN 2
GUIDE 2
HAIR 2
HEALTH 4
HELP 3
HOCKEY 2
HOME 11
HOSTING 3
HOT 3
HOTEL / HOTELS 9
IMMO 4
INC 11
INSURANCE 4
JEWELRY 2
JUEGOS 2
KID / KIDS 3
LATIONO 2
LAW 6
LAWYER 2
LIFE 3
LIVE 3
LIVING 2
LLC 9
LLP 4
LOAN / LOANS 3
LOL 2
LOVE 7
LTD 7
LUXURY 2
MAIL 7
MARKETING 3
MBA 3
MED 4
MEDIA 3
MEMORIAL 3
MOBILE 3
MOM 3
MOTO 2
MOVIE 8
MUSIC 8
NEWS 7
NOW 6
ONE 2
ONLINE 6
OSAKA 2
PARTY 2
PET / PETS 3
PHOTO / PHOTOS / PHOTOGRAPHY 4
PIZZA 4
PLACE 2
PLAY 4
PLUS 2
POKER 4
PROPERTY 3
RACING 3
RADIO 4
REALESTATE 4
REALTY 2
RENT / RENTALS 3
RESTAURANT 4
REVIEW / REVIEWS 3
RIP 3
RUGBY 2
RUN 2
SALE 5
SALON 4
SAVE 2
SCHOOL 4
SEARCH 4
SECURE / SECURITY 5
SEX/ SEXY 3
SHOP / SHOPPING 11
SHOW 4
SITE 5
SOCCER 4
SPA 3
SPORT / SPORTS 3
SPOT 3
SRL 2
STORAGE / STORE 9
STREAM 2
STUDIO 2
STYLE 5
SUCKS 3
TAXI 4
TEAM 4
TECH 6
TENNIS 4
THEATER 2
TICKETS 5
TIRES 3
TRADING 2
TUBE 3
VEDIO 4
VIP 5
VOTE / VOTING 3
WEB 7
WEBSITE 3
WEDDING 3
WEIBO 2
WINE 3
WORL” 2
WOW 3

As you can note, the largest number of Applications have come for the expression “APP” with thirteen (13) Applicants contesting for the .APP domain name.  It is also surprising to note that Apple Inc., is not one of the Applicants for the same.

Second in this list is three expressions : “.HOME”, “.SHOP/.SHOPPING”, .INC.  with 11 Applicants for each .BRAND extension.  Third in this list comes the expression “.ART” with ten companies applying for this extension.

It is rather surprising to note that expressions such as .WEBSITE / .WEB / .COMPANY does not figure among the top three.  It is also suprising to note the Apple Inc has just applied for one gTLD “.APPLE”, while google has applied for various extenions such as “.YOUTUBE, . GOOGLE, .DOCS” Etc.,

Further, both Microsoft Corporation and Google has applied for .DOCS extension.  It remains to be seen who will be emerging as the winner in this .DOT BRAND fight for .DOCS.

Karthik is the Director of Domain Name Disputes India and a Master’s Degree Holder in Intellectual Property & Technology Law at the National University of Singapore. Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

ICANN releases Long Awaited .BRAND list.

Written by Karthik Murthy on . Posted in Uncategorized

ICANN has released the long awaited list of Applicants who have applied for DOT BRAND.  While ICANN at the start expected only around 500 Applications to be filed, the final number has reached a whopping One Thousand Nine Hundred and Thirty Six (1936) Applications.  Out of these 1936, Companies in North America leads with 911 Applications, while Companies in Africa have filed only 17 Applications.  Following are the tabulted list of Applications filed by Companies in various countries.

gTLDs Applications
Africa 17
Asia/Pacific 303
Europe 675
Latin America/Caribbean 24
North America 911

It is pertinent to note that most of these 911 Applications from North America have been filed by Companies from the United States.  The most important DOT BRANDS applied are;

.YOUTUBE by Google

.YAHOO by Yahoo Inc

.XPERIA by Sony Mobiles

.XEROX by Xerox Corporation

.WINDOWS, .SKYPE, .SKYDRIVE by Microsoft Corporation

.WALMART by Walmart Stores

.VOLKSWAGEN by Volswagen Inc

.TVS by Sundaram Iyengar & Sons

.TATA & .TATAMOTORS by Tata Group

.SYMANTEC by Symantec Corporation

.SUZUKI by Suzuki Motor Corporation

.SONY by Sony Corporation

.SBI by State Bank of India

.INDIANS, .RELAINCE, . RIL by Relaince Group

.NOKIA by Nokia Corporation

.NIKE by Nike Inc

.INFOSYS. .INFY by Infosys Limited

.DOCOMO by NTT Docomo

.APPLE by Apple Inc.

These are only few of the .DOT BRAND Domains that have been applied by famous companies.  There are tough competition for certain .DOT BRANDS such as .ART / .TECH/ .WEB where at least 10 or more Companies have applied.  Our next blog post wil cover this aspect where our study will concentrate on the .DOT BRANDS that have been applied by more than a Company.

The complete listing could be found here.

Karthik is the Director of Domain Name Disputes India and a Master’s Degree Holder in Intellectual Property & Technology Law at the National University of Singapore. Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

Domain Name Disputes Decision Review – www.adigodrej.info

Written by Karthik Murthy on . Posted in Uncategorized

From a perusal of the Complaints filed with the Arbitration and Mediation Panel of the World Intellectual Property Organization (WIPO) with regard to Domain Name Disputes, it can be inferred that the Complaints filed by Indian Trade Mark owners have been comparatively less. One of the major reasons for this may be attributed to the fact that the Indian Trade Mark Owners appear not to give too much importance to domain name. Even Indian banking companies which mostly conduct their business online are silent with regard to thousands of identical cyber squatted domain names further proves this.

However, there are exceptions. Adi Godrej – Chairman of the Godrej Group has filed a Complaint with the Arbitration & Mediation Panel of the WIPO against cyber squatting of the domain name www.adigodrej.info. The Order which was made on 8th May 2012 ruled that the respondent Summit Services LLC, USA has cyber squatted the domain name and has registered the subject domain in bad faith. The Panel ruled that the disputed domain name is confusingly similar to the Trade Mark & Domain Names of the Complainant and that the disputed domain name was registered in bad faith.

Several domain names pertaining to “ADIGODREJ” are available for registration. For Ex. www.adigodrej.co.in / adigodrej.org.in / adigodrej.ind.in / adigodrej.co are available for registration. It remains to be seen if Godrej will take a more pro-active approach to register the available domain names which will reduce the instances of seeking domain name disputes and save costs.

Karthik is the Director of Domain Name Disputes India and a Master’s Degree Holder in Intellectual Property & Technology Law at the National University of Singapore. Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

Karur Vysya Bank Loses its Complaint

Written by Karthik Murthy on . Posted in Uncategorized

Karur Vysya Bank loses Complaint against registrant of www.karurvysyabank.com!

Karur Vysya Bank(KVB), one of the leading private sector banks in India has been denied relief by the Arbitration and Mediation panel of the WIPO.

Karur vysya bank, the complainant in the instant case, was set up in the year 1916. It has registered a number of domain names such as <kvb.co.in>, <karurvysya.com>, <thekarurvysyabank.com>, etc.

It is also the registered proprietor of the trademark ‘KVB’ bearing Application No. 1145374 in the office of the Trademarks Registry, Chennai.

KVB filed a Complaint with the WIPO against registration of the domain name <karurvysyabank.com> by one Lakhsmi Narasimha and prayed for transfer of the said domain name.

KVB submitted that it had exclusive rights to the trademark /domain name “Karur Vysya Bank”.  It alleged that the respondent adopted the said domain name only with a dishonest intention to cash upon on the reputation and goodwill of KVB.

Though the Panel observed that the complainant’s rights in the registered trademark would bolster the chance of relief under the Uniform Domain Name Dispute Resolution Policy, the complainant was the registered proprietor of the trademark ‘KVB’ alone. They had no Trademark registration or any Pending Application for the expression “KARUR VYSYA BANK” per se .

The Panel expressed that KVB also did not expressly claim rights under common law whereby they could have alleged that the respondents were passing off their services as from KVB.   KVB also did not submit commensurate proof to affirm the fact that the confusingly similar expression ‘KARUR VYSYA BANK’ has acquired immense reputation to the extent that general public associate the mark only with KVB.

Hence the centre adjudicated that KVB failed to prove that it had rights in the deceptively similar domain name and subsequently denied the complaint!

This Order from the WIPO proves the need for online companies to Audit their Intellectual Property Portfolio.  An IP Audit would have analysed the Intellectual Property Rights that vests with KVB and would also have suggested ways to obtain complete protection of its Intellectual Property Rights.

Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

WIPO Case Commentary – Volvo

Written by Karthik Murthy on . Posted in Uncategorized

The Arbitration and Mediation Panel of the World Intellectual Property Organization (WIPO) has ordered for transfer of two domain names viz., volvobussesindia.com & volvotickets.com in favour of the Volvo Group.

The Order which was made on 11th May 2012 ruled that the respondent Pankaj Dhobal from India has cyber squatted the domain names and has registered them in bad faith.  In the present case, the respondent has been ‘conducting business’ with the subject domain names including having a payment gateway.

It remains to be seen if Volvo will take more pro-active step with respect to the Indian market.  A huge number of domains including www.volvoindia.com appears to have been cybersquatted.

Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

Case Commentary – MasterCard

Written by Karthik Murthy on . Posted in Uncategorized

Mastercard International Incorporated, the owners of well-known Trade Mark “MASTERCARD” have filed a series of Complaints with the Arbitration Panel of the World Intellectual Property Organization (WIPO) for transfer of the following domain names;

priceless.net,

priceless.org,

pricelessmastercard.com,

pricelesslondon.com,
pricelessparis.com,

pricelesslosangeles.com,
pricelessmexico.com,
pricelessnewyork.com,

pricelessamsterdam.com,

pricelessistanbul.com.

The Complaints were filed by Mastercard to protect its right in the Trade Mark PRICELESS.  While Mastercard succeeded in getting transferred three domain names viz., priceless.net, priceless.org & pricelessmastercard.com, it appears that it has failed to convince the Arbitration Panel with regard to the other seven domain names.  The Arbitration Panel arrived at the conclusion that Mastercard failed to prove that the respondents acted in bad faith coupled with the fact that Mastercard did not provide sufficient evidence (in the form of documents) to prove the bad faith.  This would come as a big setback for Mastercard since it would be difficult to succeed in future complaints against domain names which have geographical location in addition to the expression PRICELESS.  With regard to the position in India, the domain name www.pricelessindia.com appears to have been registered by an individual.  The best strategy now available for Mastercard would be to register all the available domain names with geographical locations.  For Example www.pricelessmastercard.in / www.pricelessmastercard.co.in appear to be available for registration in India.

Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]

WIPO Case Commentary – Verizon

Written by Karthik Murthy on . Posted in Uncategorized

The Arbitration Panel of the World Intellectual Property Organization (WIPO) has ordered for transfer of nine (9) domain names in favour of the Verizon Group.  The Domain Names against which the complaint has been filed are;

www.verizoniphone4.com,

www.verizonwirelessiphone4.com,

www.verizonwirelessiphone4g.com,

www.verizonwirelessiphone5.com,

www.verizonwireless4giphone.com,

www.vzwiphone4.com,

www.vzwiphone4g.com,

www.vzwiphone5.com,

www.vzw4giphone.com.

The Order which was made on 30th March 2012 ruled that the respondent Cyrus de Ocampo (the registrant of all the nine domain names) has cyber squatted the domain names and has registered them in bad faith.  One important issue to be noted in the Order is that though the Domain Names contained the expression “IPHONE”, which is a well-known mark of Apple Inc., the Panel ruled in favour of Verizon on the ground that “the respondent’s inclusion of third-party’s Trade mark in a domain name does not eliminate confusing similarity. 

With regard to the Indian Market, it seems that mobile operators in India have not yet analysed the ‘Online Brand Protection Strategies’ and the dilution and tarnishment that a cybersquatted domain name may cause to their well-known Trade Mark.  For example, www.airteliphone.com / www.airceliphone.com have been cybersquatted.

Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at [email protected]